TTABlog Test: Is "LICKMAT" Merely Descriptive of Pet Feeding Receptacles and Pet Amusement Mats?
Okay, all you pet lovers, sink your teeth into this one. The USPTO refused to register the marks LICKMAT and LICK MAT, in standard character form, for "Feeding receptacles for pets, namely, bowls, dishes, and troughs, all for feeding" and for "Pet amusement mats being pet toys; pet toys; chewable pet toys," finding the marks to be merely descriptive of the goods under Section 2(e)(1). Applicant Innovative argued that there are no dictionary definitions for these terms, and further that both "lick" and "mat" have a wide variety of possible meanings. How you do think this came out? In re Innovative Pet Products Pty Ltd., Application Serial Nos. 90093231 and 90093238 (October 24, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).
The Board first observed that the space between LICK and MAT in applicant's compound mark is inconsequential and "even if noticed or remembered by consumers does not distinguish these marks." Based on dictionary definitions of the two words, the Board concluded that "a LICKMAT or LICK MAT is a mat for licking." Examining Attorney Natalie M. Polzer submitted webpage evidence showing use of the term in connection with "lick mats" for dogs and cats, one webpage describing the mats as an "enrichment toy for dogs and cats, like puzzle toys," that encourage the animal to up the food from the mat.
The fact that the term LICK MAT does not appear in any dictionary is not dispositive if the USPTO can show that the term has a well understood and recognized meaning. Applicant Innovative contended that because the websites define what a lick mat is, the term does not immediately describe the products. The Board was unmoved.
There are two problems with Applicant’s contention. First, as a matter of good writing form, the authors define the term lick mat to introduce the reader to the subject of the article. Second, the definitions of lick mat by the authors of the articles uniformly define a lick mat as a mat that pets lick for feeding or amusement.
Finally, Innovative argued that "lick" and "mat" both have various possible meanings. However, the Board noted, descriptiveness is not analyzed in a vacuum but in the context of the goods in question. "Specifically, '[w]e ask ‘whether someone who knows what the goods and services are will understand the mark to convey information about them.''"
And so, the Board affirmed the refusal to register.
Read comments and post your comment here.
TTABlogger comment: WHYA? Perhaps the applicant should be more innovative in selecting its trademarks.
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 10/26/2022
6 comments
6 Comments:
This is interesting but seems pretty straightforward. One thing I noticed is that the EA did not explicitly state that applicant could amend their application to be included on the Supplemental Register, but instead only states, "Thus, the proposed mark merely describes a feature, function, purpose, nature and form of the applicant’s goods. Therefore, registration on the Principal Register must be refused under Section 2(e)(1) of the Trademark Act."
Isn't amending to the Supplemental Register always available for a merely descriptive mark or is this only available when the EA offers it as an alternative to the Principal Register?
LICKMAT reminds me of GASBADGE (In re Abcor Dev. Corp., 588 F.2d 811 (CCPA 1978).
I disagree with this decision. LICKMAT as one word, is not a word, per se.
Examiners were not allowed to dissect composite marks.
A consumer would not immediately know what s LICKMAT is.
I would appeal that refusal.
I'll take it one step further, why isn't "LICK MAT" generic for, well, a mat that gets licked? What other name is there? The USPTO is too soft on this. I know the line between generic and descriptive is hard to draw, but I'd like to see more garbage marks get generic refusals.
If the applicant doesn't ask for the Supplemental Register in the alternative, the TTAB isn't going to offer it. In any case, this application was based on intent-to-use, so it was not eligible for the S.R.
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